• Zhejiang Crystal-Optech Co. Ltd. v. Viavi Solutions Inc.Institution denied
  PTAB · Feb 7, 2023 · IPR2022-01184 · APJ Debra K Stephens · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim would have been obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “8. Conclusion Based on the record before us, we determine Petitioner’s proffered arguments, evidence, and supporting testimony fails to establish a reasonable likelihood that Petitioner would prevail in showing that claims 1–7, 9, 10, 12–14, 17, 18, 20–23, 27, 30, and 31 would have been obvious over Pilgrim, Gibbons, Lairson, and Yoda.” slip op. at 32

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “II. ANALYSIS A. Discretionary Denial – 35 U.S.C. § 314(a) Patent Owner argues that we should exercise discretion to deny institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution (Prelim. Resp. 49–54). Petitioner argues we should not discretionarily deny institution under Fintiv (Pet. 66–67). Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged would have been obvious as discussed below, we do not reach this issue.” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “B. Discretionary Denial – 35 U.S.C. §325(d) Patent Owner contends we should exercise our discretion under 35 U.S.C. § 325(d) because of the Petition’s “reliance upon the secondary references Gibbons, Lairson, and Yoda. Gibbons and Lairson were considered by the Examiner, and Yoda does not contain any meaningful additional disclosure or basis for unpatentability that was not considered by the Examiner” (Prelim. Resp. 21–22). Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged in those grounds would have been obvious as discussed below, we do not reach this issue.” slip op. at 9

  • Skill levelSkill level board ownOther

    “Based on the present record including the disclosure in the ʼ269 Patent, we apply a slightly modified version of Petitioner’s definition of the level of ordinary skill in the art that removes the qualification of “at least” and clarifies some statements (see Pet. 6). More specifically, we determine a POSITA would have had a Bachelor’s degree or equivalent in physics, or in a related science or engineering field, along with five years of experience in optical element design and optical filters although additional education (e.g., a Master’s degree with exposure to optical element design and optical filters) may substitute for some industrial experience in optical element and optical filter design, and more industrial experience can substitute for a different educational background. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ269 Patent and the prior art of record (cf. Okajima, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 11

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,588,269
• Polygroup Services N.A., Inc. v. Willis Electric Co., Ltd.Adverse judgment
  PTAB · Dec 17, 2021 · IPR2021-00489 · APJ Jeffrey W Abraham · IPR · Adverse judgment

  The Board granted Patent Owner’s unopposed request for adverse judgment and terminated the IPR.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “II. DISCUSSION Under 37 C.F.R. § 42.73(b), “[a] party may request judgment against itself at any time during a proceeding.” As permitted by this Rule, Patent Owner has explicitly asked the Board to enter adverse judgment against Patent Owner under 37 C.F.R. § 42.73(b). Paper 11, 1. Having reviewed Patent Owner’s unopposed request for adverse judgment, we determine that entry of judgment against Patent Owner is appropriate. Thus, we grant the request for adverse judgment pursuant to 37 C.F.R. § 42.73(b). III. ORDER Accordingly, it is ORDERED that adverse judgment is entered against Patent Owner and this inter partes review is terminated pursuant to 37 C.F.R. § 42.73(b).” slip op. at 2

  None
  Patents in suitUS 9,671,097
• Unified Patents Inc. v. Sound View Innovations, LLCAll claims unpatentable
  PTAB · Sep 9, 2019 · IPR2018-00599 · APJ Debra K Stephens · IPR · Final written decision

  Claims 3 and 9 are unpatentable under § 103 because the cited combinations teach the claimed limitations that the Board found limiting.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related subject, and two or three years of work experience with network-based applications and/or multimedia applications. A lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 6-7 years) (Pet. 7–8 (citing Ex. 1005 ¶ 38)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.; Ex. 2002 ¶¶ 19–20). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F.3d at 1355). Based on our review of the ’074 Patent, the types of problems and solutions described in the ’074 Patent and cited prior art, and the testimony of Drs. Reddy and Jones (Ex. 1005 ¶ 38; Ex. 2002 ¶¶ 19–20), we determine a skilled artisan would have possessed a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, and two or three years of work experience with content delivery networks or applications or comparable education or work experience in the field.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “a. “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner that neither claim 3 nor claim 9 recites where the “receiving” step takes place and, in particular, neither claim recites “receiving said SM object” at the plurality of or one of the helper servers. [C]laim terms cannot be narrowed by reference to the written description or prosecution history unless the language of the claims invites reference to those sources. See, e.g., McCarty v. Lehigh Val. R.R., 160 U.S. 110, 116, 16 S. Ct. 240, (1895) (“[I]f we once begin to include elements not mentioned in the claim in order to limit such claim ..., we should never know where to stop.”); Renishaw [PLC v. Marposs Societa per Azioni], 158 F.3d 1243, 1249 [(Fed. Cir. 1998)]. In other words, there must be a textual reference in the actual language of the claim with which to associate a proffered claim construction (Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989–90 (Fed. Cir. 1999)). Here, we do not find a textual reference in “receiving said SM object.” We determine that the inventors did not introduce their own lexicographic definition, i.e., defining the term “receiving said SM object” or “receiving.” Furthermore, we are not persuaded “the term or terms chosen by the patentee[s] so deprive the claim of clarity that there is no means by which the scope of the claim may be ascertained from the language used” (see id. at 990 (citations omitted)). Nor do the preambles of claim 3 and 9, respectively, provide any textual reference that “receiving said SM object” should be interpreted as “receiving said SM object at a helper server.” Thus, “[i]n this case, the [disputed term] has a clear and well-defined meaning. This term is not so amorphous that one of skill in the art can only reconcile the claim language with the inventor’s disclosure by recourse to the specification” (Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “We disagree with Patent Owner’s assessment of the preambles of claims 3 and 9. The preamble of claim 3 recites: A method for storing a streaming media (SM) object in a network having a content server which hosts SM objects for distribution over said network through a plurality of helper servers (HSs) to a plurality of clients, said SM object being comprised of a plurality of successive time-ordered chunks, wherein a chunk is further comprised of a discrete number of segments, each segment allocated to a respective disk block of said plurality of HSs, and the preamble of claim 9 recites: A method for managing storage of a streaming media (SM) object in a network having a content server which hosts SM objects for distribution over said network through a plurality of servers to a plurality of clients (Ex. 1001, Claims). Neither of the preambles recites that storage depends on the availability of disk space. Patent Owner additionally points to Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., IPR2016-01914, Paper 64 at 11–14 (PTAB Mar. 1, 2018) (PO Resp. 10). Claim 1 of Reactive Surfaces recites:” slip op. at 20

  Patent outcomesUS 9,462,074 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,462,074
• Samsung Electronics America, Inc. v. Prisua Engineering Corp.Rehearing granted
  PTAB · Sep 27, 2018 · IPR2017-01188 · APJ Matthew R Clements · IPR · Rehearing

  The Board granted Patent Owner’s rehearing request and authorized it to re-file its Sur-Reply by September 28, 2018.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “reply “as a matter of right,” and does not address explicitly whether a Patent Owner may file a sur-reply in a case that was instituted prior to the Trial Practice Guide Update. Because the Trial Practice Guide Update did not authorize Patent Owner to file its Sur-Reply “as a matter of right,” we are not persuaded that we erred in determining that Patent Owner’s Sur-Reply was unauthorized.” slip op. at 5

  • Strike new argumentGranted

    “Notwithstanding all of the above, and out of an abundance of fairness to Patent Owner, Patent Owner is authorized to re-file its Sur-Reply no later than Friday, September 28, 2018.” slip op. at 6

  None
  Patents in suitUS 8,650,591
• Apple, Inc. v. Realtime Data LLCAll claims unpatentable
  PTAB · Mar 16, 2018 · IPR2016-01738 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 8–12, 14–22, 59–82, 101–104, 114, 115, and 117 are unpatentable as obvious; the motion to amend is granted for substitute claims 174–218.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “substitute claims “without placing the burden of persuasion on the patent owner.” Aqua Products, 872 F.3d at 1328. Yet, Patent Owner’s proposed substitute claims still must meet the statutory requirements of 35 U.S.C. § 316(d) and the procedural requirements of 37 C.F.R. § 42.121. See also “Guidance on Motions to Amend in view of Aqua Products” (Nov. 21, 2017) (https://www.uspto.gov/sites/default/files/documents/guidance_ on_motions_to_amend_11_2017.pdf) (“Guidance”). Accordingly, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. See 37 C.F.R. § 42.121.” slip op. at 51

  • ExcludeMotion to exclude, deniedDenied

    “substitute claims. Furthermore, Patent Owner’s arguments on this exhibits goes to the weight to be accorded to the evidence. The Board is capable of determining and assigning the appropriate weight to the evidence. For these reasons, we deny Patent Owner’s motion as to Exhibit 1043.” slip op. at 72

  • Strike new argumentOther

    “IV. CHALLENGE TO PETITIONER’S REPLY ARGUMENTS Patent Owner filed a list of alleged improper reply arguments (Paper 34) to which Petitioner filed a Reply (Paper 35). Patent Owner lists several portions of Petitioner’s Reply and evidence allegedly beyond the scope of what can be considered appropriate for a reply. See Paper 34. We have considered Patent Owner’s listing, but disagree that the cited portions of Petitioner’s Reply and reply evidence are beyond the scope of what is appropriate for a reply. Replies are a vehicle for responding to arguments raised in a corresponding patent owner response. Petitioner’s arguments and evidence that Patent Owner objects to are not beyond the proper scope of a reply; rather, we find that they fairly respond to Patent Owner’s arguments raised in Patent Owner’s Response. See Idemitsu Kosan Co. v. SFC LTD, 870 F.3d 1376, 1381: This back-and-forth shows that what Idemitsu characterizes as an argument raised “too late” is simply the by-product of one party necessarily getting the last word. If anything, Idemitsu is the party that first raised this issue, by arguing—at least implicitly—that Arkane teaches away from non-energy-gap combinations. SFC simply countered, as it was entitled to do. We also note for each of the items in Patent Owner’s list, Petitioner cites to pages in the Petition for support. See e.g., Paper 35, 2 (“Support for Petitioner’s argument can be found at, for example, pages 13–16 of the Petition.”), 4 (“Support for Petitioner’s argument can be found at, for example, pages 39–41 of the Petition.”); 5 (“Support for Petitioner’s argument can be found, for example, at pages 6–16, 28–29, and 32–34 of the Petition.”); 6 (“Support for Petitioner’s argument can be found, for example, at pages 11–16 of the Petition.”); 8 (“Support for Petitioner’s argument can be found, for example, at pages 11–16 of the Petition.”).” slip op. at 72

  • Expert testimonyPetitioner expert creditedOther

    “updating boot data lists by removing an association of control information that is associated with management information Table 3A. Specifically, we credit the testimony of Dr. Neuhauser, who explains how and why Sukegawa renders obvious updating a boot data list by disassociating non-accessed boot data from the boot data list. See Ex. 1003 ¶¶ 474–478 (citing Ex. 1005, 7:40–55). Dr. Neuhauser concludes an ordinarily skilled artisan “would have []found it obvious based on their knowledge of cache operation that upon the deletion of the non-accessed control information, or boot data, that management information table 3A is updated to reflect the deletion.” Ex. 1003 ¶ 474. Accordingly, we find Petitioner has established by a preponderance of the evidence that claims 20, 102, and 104 of the ’862 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Sukegawa and Dye.” slip op. at 42

  Patent outcomesUS 8,880,862 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 8,880,862
• Apple, Inc. v. Realtime Data LLCAll claims unpatentable
  PTAB · Mar 13, 2018 · IPR2016-01739 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 5, 35–46, 97, 98, and 112 are unpatentable under § 103 over at least one instituted combination; claim 46 was not shown unpatentable over Settsu alone or with Zwiegincew.

  RulingsFinal written decision

  • BurdenFwd mixedUnpatentable

    “IV. CONCLUSION For the foregoing reasons, we conclude Petitioner has shown by a preponderance of the evidence that (1) Claims 5, 35–45, and 97 are unpatentable under 35 U.S.C. § 103(a) in view of Settsu; (2) Claims 5, 35– 45, 97, 98, and 112 as unpatentable under 35 U.S.C. § 103(a) in view of Settsu and Zwiegincew; (3) Claims 5, 35–46, and 97 as unpatentable under 35 U.S.C. § 103(a) in view of Settsu and Dye; and (4) Claims 5, 35–46, 97, 98, and 112 as unpatentable under 35 U.S.C. § 103(a) in view of Settsu, Zwiegincew, and Dye. V. ORDER Accordingly, it is ORDERED that, by a preponderance of the evidence, claims 5, 35–46, 97, 98, and 112 of the ’862 patent are unpatentable;” slip op. at 46

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Therefore, we consult the patent’s specification to help clarify the meaning of claim terms. Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (holding claims “must be read in view of the specification, of which they are a part” (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996))). We must be careful, however, not to import improperly limitations into the claims or to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Given our mandate under 37 C.F.R. § 42.100(b) and the patent’s various descriptions of “boot data list,” we understand that the examples laid out in the specification are exemplary and are not to be read as limitations in the claims. Patent Owner’s proffered claim construction imports selected limitations from specific embodiments in the specification into the claim and provides an overly narrow interpretation of the claim term. Additionally, Patent Owner has not pointed to any definitions or disavowals in the specification or otherwise clearly explained why the specification’s disclosure of “boot data lists” should not guide our claim construction analysis. Thus, we are unpersuaded by Patent Owner’s contentions, which appear to be based on a narrow reading of the claim that is inconsistent with the broadest reasonable interpretation of the claims. Accordingly, we decline to adopt Patent Owner’s claim construction as it would limit unnecessarily the scope of the claims. Instead, we find the broadest reasonable construction of “boot data list” to encompass a “list of boot data.”” slip op. at 8

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner does not dispute Dr. Neuhauser’ testimony. See generally PO Resp. Patent Owner’s Declarant, Dr. Godmar Back (“Dr. Back”), however, provides his own assessment regarding a person of ordinary skill in the art relevant to the ’862 patent and agrees with Dr. Neuhauser’s testimony. Ex. 2008 ¶ 50. We do not observe a meaningful differences between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our analysis in this Decision is supported by either assessment. Based on our review of the ’862 patent, the types of problems and solutions described in the ’862 patent and cited prior art, and the testimony of Dr. Neuhauser and Dr. Back, we adopt and apply Dr. Back’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. D. Overview of the Asserted Prior Art” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Settsu fails to teach “updating a boot list.” Rather, we agree with the testimony of Dr. Neuhauser regarding the similarities between Settsu’s OS and the functionality of the Windows 98 OS, and why a person of ordinary skill in the art would have considered updates to have occurred to the boot data lists in Settsu. See Ex. 1003 ¶ 117; Ex. 1003, 5:39–51, 13:55–65, 14:44–52, 16:7–17:62, Figs. 12, 20(ST213). Specifically, we determine that a person of ordinary skill in the art would have understood that OS modules, such as Settsu’s, would have required updates when new, updated code becomes available. See Ex. 1003 ¶ 117 (citing O’Reilly 110–112). We agree with Dr. Neuhauser that to accomplish these updates, a person of ordinary skill in the art would have understood that updates occur to boot data lists in Settsu; namely, updates to lists of boot data included within OS functional module files stored in boot device 3, as well as updates to lists of boot data, such as the function definition file 71 or the OS main body module 8. See id. Given the explicit teaching of Settsu and the credible testimony of Dr. Neuhauser regarding the state of the art and the knowledge of one of skill the art, we are unmoved by Patent Owner’s argument regarding the prosecution history of the ’862 patent or that the Examiner fully understood the implications of Settsu’s Figure 20. Accordingly, based on the entirety of the record and evidence, and crediting the testimony from Dr. Neuhauser (see Ex. 1003 ¶¶ 78, 116–118), we determine that “updating the boot data list” is taught or suggested by Settsu, and the subject matter of the claim as whole would have been obvious to a person of ordinary skill in art in view of Settsu.” slip op. at 22

  Patent outcomesUS 8,880,862 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 8,880,862
• Apple, Inc. v. Realtime Data LLCAll claims unpatentable
  PTAB · Mar 13, 2018 · IPR2016-01737 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–4, 6, 7, 13, 23–34, 47–58, 83–96, 99, 100, 105–111, 113, and 116 are unpatentable as obvious; substitute claims 118–173 are allowed.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Therefore, we consult the patent’s specification to help clarify the meaning of claim terms. Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (holding claims “must be read in view of the specification, of which they are a part” (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996))). We must be careful, however, not to import improperly limitations into the claims or to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Given our mandate under 37 C.F.R. § 42.100(b) and the patent’s various descriptions of “boot data list,” we understand that the examples laid out in the specification are exemplary and are not to be read as limitations in the claims. Patent Owner’s proffered claim construction imports selected limitations from specific embodiments in the specification into the claim and provides an overly narrow interpretation of the claim term. Additionally, Patent Owner has not pointed to any definitions or disavowals in the specification or otherwise clearly explained why the specification’s disclosure of “boot data lists” should not guide our claim construction analysis. Thus, we are unpersuaded by Patent Owner’s contentions, which appear to be based on a narrow reading of the claim that is inconsistent with the broadest reasonable interpretation of the claims. Accordingly, we decline to adopt Patent Owner’s claim construction as it would limit unnecessarily the scope of the claims. Instead, we find the broadest reasonable construction of “boot data list” to encompass a “list of boot data.”” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner does not dispute Dr. Neuhauser’ testimony. See generally PO Resp. Patent Owner’s Declarant, Dr. Godmar Back (“Dr. Back”), however, provides his own assessment regarding a person of ordinary skill in the art relevant to the ’862 patent and agrees with Dr. Neuhauser’s testimony. Ex. 2008 ¶ 55. We do not observe a meaningful differences between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our analysis in this Decision is supported by either assessment. Based on our review of the ’862 patent, the types of problems and solutions described in the ’862 patent and cited prior art, and the testimony of Dr. Neuhauser and Dr. Back, we adopt and apply Dr. Back’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. D. Overview of the Asserted Prior Art” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “Based on (1) the teachings of Dye that are directed to improved memory capacity and performance, specifically improved data density, efficiency, and bandwidth (Ex. 1008, at [57], 2:42–46), (2) the teachings of Dye ’284 directed to implementing Dye’s techniques to hard disk drives and flash memory, and (3) crediting of the persuasive testimony of Dr. Neuhauser demonstrating both the applicability of Dye to Sukegawa and explaining why a person of ordinary skill in the art would have combined the prior art teachings, we find Petitioner has articulated sufficient reasoning with rational underpinning to combine the references as asserted.” slip op. at 33

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “of right, but rather must be proposed as a part of a Motion to Amend. 35 U.S.C. § 316(d). The Board must assess the patentability of proposed substitute claims “without placing the burden of persuasion on the patent owner.” Aqua Products, 872 F.3d 1290. Yet, Patent Owner’s proposed substitute claims still must meet the statutory requirements of 35 U.S.C. § 316(d) and the procedural requirements of 37 C.F.R. § 42.121. See also “Guidance on Motions to Amend in view of Aqua Products” (Nov. 21, 2017) (https://www.uspto.gov/sites/default/files/documents/guidance_ on_motions_to_amend_11_2017.pdf) (“Guidance”). Accordingly, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. See Guidance. For reasons set forth below, we determine Patent Owner has satisfied its burden with respect to the above-discussed requirements of 37 C.F.R. § 42.121. Patent Owner seeks to add fifty-five (55) substitute claims to replace the fifty-five (55) challenged claims found unpatentable, and each substitute claim adds limitations that purport to narrow the scope of the original claim it replaces. See Mot. 2–4, Claim Appendix, iii–xii. Patent Owner also identifies disclosures in the originally-filed application that fall within the scope of proposed substitute claims 118–173. Mot. 4–17 (citing Ex. 2010; Ex. 2017; Ex. 2022). Patent Owner further identifies support in the original specification for the limitation in substitute independent claims 118, 122, and 124 that the preloading may occur into volatile memory. Mot. 5–6 (citing Ex. 2017, 12:16–18 (“[T]he cache 13 may comprise volatile or non-volatile memory, or any combination thereof. Preferably, the cache 13 is implemented in SDRAM (static dynamic random access memory), 41:4– 9, 42:17–20, 43:13–14, Fig. 7B), 8–15.” According to the testimony of Dr. Back, a person of ordinary skill in the art would have understood that SDRAM is volatile memory. See Ex. 2022 ¶ 23. We note that further support for substitute claims 118–173 can be found in the original specification’s discussion of preloading portions of the computer operating system from the boot device (e.g., hard disk) into the onboard cache memory. Ex. 2017, 41:4–5. We, thus, find written description support for Patent Owner’s proposed substitute claims. Moreover, Patent Owner proposes a narrowing limitation in each proposed substitute claim in direct response to the grounds of unpatentability involved in this trial. Therefore, Patent Owner has satisfied the procedural” slip op. at 44

  Patent outcomesUS 8,880,862 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 8,880,862
• Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.Rehearing granted
  PTAB · Nov 14, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Rehearing

  Granted rehearing and held claims 2, 4, and 6 unpatentable as obvious over Rabinovich because the wireless-network limitation encompasses a connection through a wireless hub.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Petitioner.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub. Because we determine that the “wireless network” recited in dependent claims 2, 4, and 6 need not be an ad hoc network, Patent Owner’s argument that Rabinovich’s replication method would have been unsuitable for use over an ad hoc network does not persuasively rebut Petitioner’s showing. Having considered the arguments and evidence of both parties, we are persuaded that Petitioner has shown by a preponderance of the evidence that dependent claims 2, 4, and 6 are unpatentable under 35 U.S.C. § 103(a) as obvious over Rabinovich.” slip op. at 7

  • ExcludeNot reached

    “We decline to assess the merits of Petitioner’s Motion to Exclude. Even without excluding the identified evidence, we have concluded that Petitioner has demonstrated, by a preponderance of the evidence, that claims 2, 4, and 6 are unpatentable. Accordingly, Petitioner’s Motion to Exclude is dismissed as moot.” slip op. at 8

  Claim construction§ 103 obviousness
  Patents in suitUS 7,904,680
• Autodesk, Inc. v. Uniloc USA, Inc. And Uniloc Luxembourg, S.A.All claims unpatentable
  PTAB · Sep 11, 2017 · CBM2016-00043 · APJ Christopher M Kaiser · CBM · Final written decision

  Claims 1, 2, 4–7, and 12–19 are unpatentable under § 101; claims 3, 8–11, and 20 are subject to adverse judgment after disclaimer.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “B. Statutory Disclaimer During the pendency of this proceeding, Patent Owner filed a disclaimer pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2014. According to this disclaimer, Patent Owner disclaims claims 3, 8–11, and 20 of the ’820 patent. Id.; see also Resp. 1 (“Contemporaneously with the filing of this Response, Patent Owner is disclaiming claims 3, 8, 9, 10, 11, and 20 of the ’820 Patent.”). Our rules provide for entry of adverse judgment against a Patent Owner who disclaims “a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Although Patent Owner does not disclaim all the challenged claims, and although Patent Owner therefore has some claims remaining in this trial, we construe the disclaimer of claims 3, 8–11, and 20 as a request for the entry of adverse judgment solely with respect to those claims. We grant the request and enter adverse judgment with respect to claims 3, 8–11, and 20.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “1. Add-On Computer Software Code Both parties propose construing “add-on computer software code,” a term that appears in every challenged claim. Ex. 1001, 78:43–82:36. Petitioner argues that this term should be interpreted as a “set of computer code that cannot be run independently from a parent program.” Pet. 22. Patent Owner argues that the term should be interpreted as “set of computer code that is designed to run within a parent computer software application or code, particularly architectural CAD software (or another architectural, civil, industrial, or other software design tool), as an internal component.” Resp. 42–43. We agree with Patent Owner. Patent Owner’s construction is taken directly from the written description of the ’820 patent, which provides a reasonably clear, deliberate, and precise definition of the term. See Paulsen, 30 F.3d at 1480; Ex. 1001, 61:42–51 (“The plug-in (add-on) computer software code is . . . .”). To the extent that Petitioner’s proposed construction seeks to limit add-on software code further by requiring that the software code be incapable of running independently from a parent program, as opposed merely to being designed to run within the parent program as an internal component, this further limitation is inconsistent with the lexicography undertaken by the patentee of the ’820 patent. Accordingly, we construe “add-on computer software code” as a “set of computer code that is designed to run within a parent computer software application or code, particularly architectural CAD software (or another architectural, civil, industrial, or other software design tool), as an internal component.”” slip op. at 6

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “As discussed above, the ’820 patent describes solving problems with the generation of cost estimates of construction projects, including that the process takes significant time and effort, that the estimates produced are difficult to revise, and that the estimates can be inaccurate, leading to cost overruns and difficulties obtaining construction loans. Ex. 1001, 1:15–62. The claims recite a computer readable medium or system for automating the process of generating a price schedule, which is used to develop the overall project cost estimate. Id. at 78:43–82:36. In so doing, the claims do not recite any “specific asserted improvement in computer capabilities,” such as the “self-referential table for a computer database” in Enfish, 822 F.3d at 1336. Instead, the claims of the ’820 patent “invoke[]” known aspects of computer technology, including “[a] non-transitory computer readable medium,” “a computer that includes a processor and a memory,” “an add-on computer software code,” “a software design tool,” and “a database,” “merely as a tool” for solving the problem of improving the known process of generating construction project cost estimates. Id.; Ex. 1001, 78:43–60. Accordingly, the claims of the ’820 patent are not like those considered in Enfish, where the claims were determined at the first step of the Alice framework not to be directed to abstract ideas because they were directed to “[a] specific asserted improvement in computer capabilities.” 822 F.3d at 1336. Instead, Petitioner has shown by a preponderance of the evidence that the challenged claims of the ’820 patent are focused “on a process that qualifies as an ‘abstract idea.’” Id. The ’820 patent makes clear that the heart of the claimed subject matter is generating prices for construction projects, a process that can be accomplished without automation technology. Ex. 1001, 1:15–62. The claims themselves recite “[a] non-transitory computer readable medium [that] causes [a] computer to generate a price schedule” and “[a] system for creating a pricing schedule.” Id. at 78:43–51, 82:4. As discussed above, the computer technology recited in the claims is used merely as a tool to automate the process of determining the price of a construction project. Determining a price is an abstract idea. See Versata Dev. Grp., 793 F.3d at 1333–34 (Fed. Cir. 2015). Thus, on the current record, Petitioner has made a sufficient showing that the claims of the ’820 patent are directed to an abstract idea under the first step of the Alice analysis.” slip op. at 20

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “application of an abstract idea. Mayo, 566 U.S. at 78. Petitioner argues that the challenged claims have no such elements, because “the challenged claims add nothing more than well-understood, routine, conventional activity to the abstract idea of calculating a price.” Pet. 32–48. Patent Owner argues that the presence of the add-on computer software code limitations in the challenged claims transforms those claims into patent-eligible applications. Resp. 49–50. We are persuaded that Petitioner has shown by a preponderance of the evidence that the challenged claims of the ’820 patent do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355.” slip op. at 23

  Patent outcomesUS 8,515,820 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Enfish
  Patents in suitUS 8,515,820
• DISH Network L.L.C. v. TQ Beta, LLCNo claims unpatentable
  PTAB · Jan 30, 2017 · IPR2015-01791 · APJ John F Horvath · IPR · Final written decision

  The Board entered adverse judgment against claims 11, 14, and 15; petitioner did not show claim 13 unpatentable under any of the three instituted grounds.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “The Board’s rules permit a party to “request judgment against itself at any time during a proceeding.” 37 C.F.R § 42.73(b). The Board construes a party’s “[a]bandonment of the contest,” as a request for adverse judgment. 37 C.F.R § 42.73(b)(3). Accordingly, we construe Patent Owner’s lack of response to Petitioner’s various challenges to claims 11, 14, and 15, Patent Owner’s offer to cancel claims 11, 14, and 15, and Patent Owner’s admission that it was “not contesting those claims,” to be an “abandonment of the contest,” and a request for adverse judgment. See PO Resp. 2 n.2; see also Tr. 24:12–18. The request for entry of adverse judgment on claims 11, 14, and 15 is granted, concurrently with entry of adverse judgment on these same claims in DISH Network L.L.C. et al. v. TQ Beta, LLC, Case IPR2015-01756 (PTAB) (Paper 31).” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “B. Claim Construction The Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2142–46 (2016). Consistent with the rule of broadest reasonable interpretation, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner asks us to construe the terms “delay between first time frame and second time frame,” “first geographic location,” and “second geographic location.” Pet. 12–14. Petitioner does not propose any constructions for these terms, but asks they be construed in the manner implied by Patent Owner’s infringement contentions in the District Court litigation. Id. In our Decision to Institute, we declined to expressly construe these claim terms, finding their meaning was readily understood by persons of ordinary skill in the art. Dec. Inst. 6. Neither Petitioner nor Patent Owner contests that decision. See PO Resp. 12–13; Pet. Reply passim. Based on the record developed during this proceeding, we find no need to expressly construe these claim terms.” slip op. at 5

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Although we agree with Petitioner that the ’456 patent discloses “encoding the received signal” using a lossy encoding algorithm, using a lossy encoding algorithm to encode a signal does not identify the signal to which the encoding algorithm is applied. Claim 13 requires encoding the received television signal—using a lossy or lossless encoding algorithm— and Patent Owner persuasively argues that Monteiro’s Primary Servers 20, by compressing an extracted audio stream only, are not encoding the received television signal, which has both audio and video components. See PO. Resp. 16–17; Ex. 2003, 2180 (defining a “television signal” as “the visual and aural signals that are broadcast together in order to produce the picture and sound components of a television program.”) (emphasis added).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “In an inter partes review, Petitioner bears the burden of proof. See 35 U.S.C. § 316(e). Thus, Petitioner must “demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Intelligent Bio–Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367-68 (Fed. Cir. 2016) (internal quotations omitted). Petitioner argues one reason to combine Monteiro and Compton is because both references are directed “to giving a user greater control of the time and place for reproduction of audio or visual information as desired by a user.” Pet. 55 (emphasis added). The fact that two references are directed to solving the same problem is an indication that the references are analogous art that can be combined. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). It is not, however, a reason, in itself, explaining why a person skilled in the art would have combined certain specific teachings of the references in a certain way. Even if it might have been obvious, given Monteiro’s teaching to provide audio and/or video communication services, to modify Monteiro’s processing of received television signals to encode and transmit the received signal’s audio and video components as taught by Compton, Petitioner did not make that argument and did not present the evidence in a manner supporting that theory. The Board does not “raise, address, and decide unpatentability theories never presented by the petitioner.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016). Instead, the Board’s decision is based “on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.” Id. Moreover, Petitioner’s assertion that Monteiro is directed to giving users greater control of the time and place for reproduction of audio/video information is not supported by the evidence. In Monteiro, it is the distributor of audio/video information that chooses the distribution time, not Monteiro’s user. For example, Monteiro discloses real-time information can be delivered to any number of users because “the same information is being sent at approximately the same time to everyone who is enabled to receive the information.” Ex. 1016, 2:11–16 (emphasis added). Monteiro further discloses that users can “choose[] to tune in or tune out a particular [distribution] channel, but do[] not choose the time at which the channel distributes its information.” Id. at 2:20–22 (emphasis added). Thus, Monteiro does not allow the user to choose the time for video reproduction, and Petitioner fails to articulate a reason why a skilled artisan would have been motivated to modify Monteiro to include the elements of Compton that would have allowed the user to choose the time for video reproduction.” slip op. at 15

  Patent outcomesUS 7,203,456 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,203,456

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.